DCT
4:23-cv-04603
Sonomatic Ltd v. Innetiqs GmbH
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Sonomatic Limited (Scotland)
- Defendant: InnetiQs GmbH (Germany)
- Plaintiff’s Counsel: Foley & Lardner LLP
- Case Identification: 4:23-cv-04603, S.D. Tex., 12/08/2023
- Venue Allegations: Plaintiff alleges venue is proper in the Southern District of Texas because Defendant has committed acts of patent infringement in the state and district.
- Core Dispute: Plaintiff alleges that Defendant’s non-destructive testing systems for the energy sector infringe two U.S. patents related to partial saturation eddy current inspection technologies.
- Technical Context: The technology involves using combined electromagnetic and ultrasonic methods to detect flaws in industrial materials, a process crucial for safety and maintenance in the offshore and onshore energy industries.
- Key Procedural History: The complaint emphasizes that Defendant’s founder, Andreas Boenisch, is the named inventor of both asserted patents. This allegation of direct, personal knowledge of the patents is foundational to the claims of knowing and willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2007-01-27 | Earliest Priority Date for ’860 Patent |
| 2009-11-16 | Earliest Priority Date for ’018 Patent |
| 2013-09-17 | ’860 Patent Issued |
| 2015-12-15 | ’018 Patent Issued |
| 2023-12-08 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,536,860: Method and Apparatus for Non-destructive Testing (Issued Sep. 17, 2013)
The Invention Explained
- Problem Addressed: The patent describes that conventional non-destructive testing (NDT) methods, when used in isolation, can fail to detect "minor material damage, slight changes in the material and/or slight reductions of wall thickness" in prefabricated parts like industrial tubulars (U.S. Patent No. 8,536,860, col. 1:23-27). This necessitates additional, often "labour intensive and time-consuming," testing to ensure component integrity (col. 1:27-30).
- The Patented Solution: The invention proposes a method and apparatus that performs at least two different types of tests—selected from conventional eddy current, partial saturation eddy current, and ultrasonic testing—on a single test object (col. 1:52-58). The system then combines the data sets from these different test phases and processes the combined data, allowing for a more accurate and reliable evaluation of the object's damage condition by cross-referencing results from the different methods (col. 2:30-44).
- Technical Importance: This approach of combining and cross-referencing data from multiple NDT modalities aimed to increase the accuracy of detecting marginal damage conditions without relying on the subjective interpretation of a human operator (’860 Patent, col. 2:38-44).
Key Claims at a Glance
- The complaint asserts independent claims 34 (method) and 35 (apparatus) (Compl. ¶15).
- Independent Claim 34 requires, in essence:
- Performing at least two different test phases on an oilfield tubular test object, selected from a group including eddy current testing, partial saturation eddy current testing, and ultrasonic testing.
- Obtaining a measurement data set from each of the different test phases.
- Combining the measurement data sets in a data processing means.
- Processing the combined data to evaluate a damage condition of the object.
- The complaint reserves the right to assert additional claims.
U.S. Patent No. 9,213,018: Partial Saturation Eddy Current Sensor Apparatus and Method of Use (Issued Dec. 15, 2015)
The Invention Explained
- Problem Addressed: The patent explains that conventional Partial Saturation Eddy Current Testing (PSET) is a comparative technique where results can be skewed if the material properties of the test object do not precisely match the reference sample used for calibration (’018 Patent, col. 2:24-34). When operated in an "absolute mode," PSET is prone to "false hits" where it incorrectly identifies harmless material property variations (e.g., from fatigue) as genuine defects (e.g., wall loss) because it cannot distinguish between the two (col. 2:40-54).
- The Patented Solution: The invention integrates a magnetic field sensor (such as a Hall sensor) directly into the PSET probe. This allows the apparatus to measure the actual permeability of the material being tested (’018 Patent, col. 3:13-17). This measurement is then used as a "feedback signal to the magnetiser unit" to automatically adjust the applied DC magnetic field, ensuring the permeability within the test component is maintained at a predetermined, calibrated level. This active control reduces false readings and removes the need for corroboration by other NDT techniques (col. 13:1-7; Abstract).
- Technical Importance: By enabling direct measurement and control of permeability, the invention sought to make PSET a more accurate, reliable, and standalone inspection method, less susceptible to variations in material properties.
Key Claims at a Glance
- The complaint asserts independent claim 1 (apparatus) (Compl. ¶27).
- Independent Claim 1 requires, in essence:
- A sensor module with a magnetiser unit for generating a variable DC magnetic field and at least one eddy current probe.
- The module is configured to perform a partial saturation eddy current test.
- The eddy current probe comprises a magnetic field sensor that provides a means for measuring permeability within the test component.
- The magnetic field sensor provides a feedback signal to the magnetiser unit.
- The complaint reserves the right to assert additional claims.
III. The Accused Instrumentality
Product Identification
The complaint identifies "IQ's MagControl family of products and technologies, specifically including the MagIQ SZ200 line of products" (Compl. ¶8).
Functionality and Market Context
The MagIQ SZ200 is described as a scanning system that uses "partial saturation eddy current technologies" for non-destructive inspection (Compl. ¶8). The system allegedly incorporates sensor arrays, performs axial and circumferential scans, and uses "MatriQs Software" for data processing (Compl. ¶16). In at least one embodiment, the system is alleged to use a "cooled and stabilized electromagnet" and a sensor module with up to 16 sensors (Compl. ¶28). The complaint alleges the product line has been promoted and offered for sale in the U.S. through a collaboration with Oceaneering International, Inc. in Houston, Texas (Compl. ¶8).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
’860 Patent Infringement Allegations
| Claim Element (from Independent Claim 34) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| performing at least two different test phases on an oilfield tubular test object, the test phases selected from the group comprising: eddy current testing, partial saturation eddy current testing, and ultrasonic testing | The MagIQ SZ200 system incorporates "high-frequency, partial saturation eddy current sensor arrays, with integrated ultrasonic sensor arrays." | ¶16 | col. 1:52-58 |
| obtaining a measurement data set from the at least two different test phases, each measurement data set comprising measurement data corresponding to a plurality of test positions | The system obtains "data sets from said partial saturation eddy current and ultrasonic sensor arrays obtained from axial and circumferential directional scans." | ¶16 | col. 1:58-61 |
| combining the measurement data sets in a data processing means and processing the combined measurement data to evaluate a damage condition of the oilfield tubular test object | The system performs "data processing of comparison scans from the data sets to identify defects in the material surface using at least IQ's MatriQs Software." | ¶16 | col. 1:62-65 |
’018 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a partial saturation eddy current sensor module for the non-destructive testing of a test component... | The accused instrumentality is the "MagIQ SZ200 scanning system" which incorporates a "partial saturation eddy current sensor module." | ¶28 | col. 3:5-17 |
| a magnetiser unit generating a variable DC magnetic field within the test component | The system includes a "magnetization unit for generating a variable DC magnetic field," allegedly utilizing a "cooled and stabilized electromagnet." | ¶28 | col. 3:7-9 |
| wherein the at least one eddy current probe comprises a magnetic field sensor that provides a means for measuring the permeability within the test component | The system incorporates "eddy current sensors that measure permeability within the tested material." | ¶28 | col. 3:13-17 |
| wherein the magnetic field sensor provides a feedback signal to the magnetiser unit | The system uses "at least one sensor to provide feedback to the magnetizer unit to generate data for comparative analysis, utilizing IQ's MatriQs Software." | ¶28 | col. 13:1-3 |
Identified Points of Contention
- Scope Questions: For the ’018 Patent, a central dispute may arise over the term "feedback signal." The complaint alleges the feedback is used "to generate data for comparative analysis" (Compl. ¶28), whereas the patent specification describes the feedback signal as a mechanism to control the magnetizer and maintain a constant permeability (col. 13:1-7). The court may need to determine if "feedback for analysis" meets the claim limitation of "feedback signal to the magnetiser unit," which the patent frames as a control input.
- Technical Questions: For the ’860 Patent, a key question is whether the MagIQ SZ200 system performs two different test phases from the claimed group and "combines" their data as claimed. The allegations mention "partial saturation eddy current sensor arrays, with integrated ultrasonic sensor arrays" (Compl. ¶16). The infringement analysis will turn on whether these function as distinct test modalities whose data is subsequently combined for cross-verification, or whether they operate in a more integrated manner not contemplated by the patent.
V. Key Claim Terms for Construction
’018 Patent
- The Term: "feedback signal to the magnetiser unit" (from Claim 1)
- Context and Importance: This term is the central inventive concept of the ’018 patent. The definition will be critical to infringement. Practitioners may focus on this term because the complaint’s characterization of the feedback's purpose ("for comparative analysis") may not align with the control-oriented function described in the patent specification.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that any data signal from the sensor that is returned to a component of the magnetizer system for any purpose, including analysis or display, qualifies as a "feedback signal." The claim language itself does not explicitly limit the purpose of the signal.
- Evidence for a Narrower Interpretation: The specification repeatedly links the feedback to active control, stating the feedback allows the magnetic field density "to be automatically monitored and controlled" to "maintain the required level of permeability" (’018 Patent, col. 10:2-5). This language suggests the "feedback signal" must be part of a closed-loop control system that adjusts the magnetizer's output, not merely a data stream for later analysis.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant induces infringement by "offering for sale and selling" the MagIQ SZ200 system to its customers for use in non-destructive testing in a manner that infringes the patents (Compl. ¶¶18, 29).
- Willful Infringement: The willfulness allegations are based on claims of both pre- and post-suit knowledge. The complaint asserts that Defendant’s founder, Andreas Boenisch, is the named inventor of both the ’860 and ’018 patents, which it argues constitutes specific prior knowledge of the patents and their content (Compl. ¶¶14, 18, 26, 29). Post-suit willfulness is alleged based on notice provided by the complaint itself.
VII. Analyst’s Conclusion: Key Questions for the Case
- The "Inventor-Defendant" Factor: A primary issue will be the legal and factual impact of the defendant's founder being the named inventor of the patents-in-suit. This fact provides a direct line to alleging pre-suit knowledge, which will be central to the claims for willful and induced infringement and any potential damages enhancement.
- Functional Mismatch on "Feedback": A key evidentiary question for the ’018 patent will be one of functional operation. Does the accused system’s alleged use of sensor data to "generate data for comparative analysis" perform the same function as the claimed "feedback signal to the magnetiser unit," which the patent specification describes as an input for a closed-loop system that actively controls and maintains the material's permeability during testing?
- The Nature of "Combining" Data: For the ’860 patent, the case may turn on a question of technical scope. Does the data processing performed by the accused "MatriQs Software" meet the claimed step of "combining the measurement data sets" from distinct test types to cross-verify and evaluate damage, or does the software perform a different type of data analysis that falls outside the claim?